Benelux Intellectual Property Office tosses Gleissner bad faith trade mark application

The Benelux Intellectual Property Office has recently confirmed in Oneworld that the Benelux is not the appropriate jurisdiction for speculative trade marks and trade mark squatting, invalidating a Benelux trade mark of infamous trade mark troll Michael Gleissner on grounds of bad faith.

The facts

The chronology of facts underlying the case was remarkable, to say the least: Oneworld Alliance Inc (‘Oneworld’), an alliance of well-known airline companies operating throughout the world, owns and uses several EU trade marks covering the word “ONEWORLD”.

CKL Holdings NV (‘CKL’), a Belgian company owned by renowned trade mark squatter Michael Gleissner, applied for revocation of several of Oneworld’s EU trade marks before the European Union Intellectual Property Office (‘EUIPO’). CKL argued that those trade marks had not been genuinely and sufficiently used in the EU. Although Oneworld had adduced compelling evidence, the EUIPO cancellation division found that evidence to be insufficient and revoked the EU marks. While Oneworld appealed before the EUIPO Board of Appeal and brought further evidence, it subsequently also applied for new EU trade marks. However, those EU trade mark applications were blocked in opposition proceedings by a Benelux trade mark covering the word ‘Oneworld’ which CKL filed immediately after the revocation decision of EUIPO’s cancellation division. Remarkably, CKL’s registered Benelux trade mark did not only cover identical ‘travel information services’ in class 39, but also ‘clothing’ in class 25 and ‘fashion design services’ in class 42. CKL argued that Oneworld’s later EU trade marks were likely to cause confusion with its earlier Benelux trade mark.

Bad faith?

Oneworld subsequently requested the Benelux Office to declare that CKL’s Benelux trade mark were subject to cancellation as they had been applied for in bad faith. Even though, unlike many Anglo-Saxon trade mark systems, the Benelux and EU trade mark systems do not require the applicant to make an express ‘intent to use’ statement, recent case-law of the EU Court of Justice, in particular in Koton (case C-104/18 P), has held that a trade mark is applied for in bad faith where it is apparent from relevant and consistent indicia that the proprietor of a trade mark has filed the application not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin.

The Office’s general reprimand

In its decision of 22 October 2020, the Benelux Office unambiguously sided with Oneworld. Although the obvious chronology of facts clearly pointed to CKL attempting to unlawfully block Oneworld’s further trade mark applications, the Benelux Office went beyond the specific facts of the case. In a quite succinct decision, the Benelux Office issued a general statement that all of CKL’s trade mark appeared to follow an identical strategy intended to block undertakings seeking to use the trade mark system in accordance with its essential function of guaranteeing a system of undistorted competition, without itself appearing to have any honest intention to use any trade mark in commerce. The abundance of CKL’s trade mark filings in the Benelux and elsewhere for all kinds of different classes and its refusal to provide any explanation whatsoever into the use and logic of these filings, especially in relation to the many different unrelated goods and services covered by them, was in itself tantamount to bad faith.

Significant impact

The decision is noteworthy and serves as an important precedent. The impact is significant as it goes beyond the specific facts of the case: Gleissner related companies have filed several hundreds of Benelux trade marks that are relied on in Benelux or EU opposition, revocation or cancellation proceedings. It is to be expected that all of these trade marks are likely to be declared invalid before the Benelux Office on claims of injured trade mark owners based on the same reasoning.

Oneworld was represented through FENCER. For further information on this topic,
please contact Jeroen Muyldermans.